In a 2021 nonprecedential case, the Trademark Trial and Appeal Board affirmed the refusal to register the mark GENRESTORE for dietary supplements and under §2(d) found it likely to cause confusion with the mark RESTOREGEN for dietary supplements, as well.

The Board began its analysis of the marks starting with the second and third DuPont factors, which look at the goods under the marks, the channels of trade and the classes of consumers. For the second factor, both GENRESTORE and RESTOREGEN cited “dietary supplements” as the goods. So, that factor weighed heavily in favor of finding a likelihood of confusion. Further, the Board found that since the listed goods were identical, the degree of similarity between the marks necessary to find a likelihood of confusion was lesser. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908(Fed. Cir. 2012). In regard to the third factor, the Board presumed that the trade channels and consumer classes would be similar, given that the listed goods were identical. Therefore, those factors weighed in favor of finding confusion likely. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same).

The Board then turned its attention to the first DuPont factor, which examines the similarity of the marks in their entireties as to their appearance, sound, connotation and commercial impression. It started the analysis by looking at the terms within each mark. First, the applied-for mark, GENRESTORE, combined GEN and RESTORE with no space in between, while the registered mark, RESTOREGEN, combined the same terms in the reverse order, still with no space between. The Board found that the similarities in the wording outweighed the differences. Moreover, it stated that that the terms GEN and RESTORE look and sound identical, regardless of the order reversal. It also found that the marks conveyed the same meaning when used in connection with identical goods, which in this case were dietary supplements. The Board stated, “While Applicant’s mark presents the terms in Registrant’s mark in reverse order, this difference is not sufficient to overcome the confusion which would arise out of Applicant and Registrant using identical terms for identical goods.” The Applicant attempted to argue that the marks conveyed “distinctively different commercial impressions” since the registered mark “refers to restoring (restore) a genetic (gen) response,” while the applied-for mark while “refers to generation (gen) and restore.” The Board did not deny some merit in the argument, but found the merit baseless, as the Applicant provided no supporting evidence. Further, the Applicant ultimately conceded that the overall commercial impression of both marks implied the listed goods offered under the marks would both “restore” something missing in the user’s body or diet. Thus, the Board found that the marks created similar commercial impressions.

On a final note in reference to the first DuPont factor, the Board stated that it must be kept in mind that (1) “the fallibility of memory over a period of time;” (2) that the “average” purchaser “normally retains a general rather than a specific impression of trademarks;” and (3) that Applicant’s and Registrant’s marks are comprised of the same terms and used in connection with identical goods.” See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Therefore, the first factor weighed heavily in favor of finding a likelihood of confusion.

Finally, the Board looked at the fourth DuPont factor, which looks at the consumers’ sophistication and the degree of care used in the purchase. It found that this factor weighed against a finding of a likelihood of confusion, as the target consumers were more likely to exercise a certain degree of care, as the listed goods were dietary supplements. Ultimately, the Board concluded that this factor was outweighed by the other relevant DuPont factors and affirmed the §2(d) refusal to register the applied-for mark GENRESTORE.

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the refusal to register the mark KING’S RANSOM for “spirits, namely, aged luxury Scotch whisky for private sale only by invitation,” and found it not likely to cause confusion under §2(d) with KING’S RANSOM for “wines.”

In examining marks for likelihood of confusion, all relevant DuPont factors must be considered. Further, there are two key considerations, which must be accounted for: the similarities between the marks, and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004). With this in mind, the Board conducted its analysis of the marks: KING’S RANSOM for “spirits, namely, aged luxury Scotch whisky for private sale only by invitation,” and KING’S RANSOM for “wines.”

Briefly turning to the first DuPont factor, which looks at the similarities of the marks in their entireties, the Board found that this factor weighed heavily in favor of likelihood of confusion, as the marks were identical in appearance, sound, connotation and commercial impression. See DuPont, 177 USPQ at 567.

The Board then looked at the second and third DuPont factors, which relate to the goods, trade channels and classes of consumers. “[L]ikelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). In analyzing the second and third factors, the Board referred to the goods listed in both the application and the cited registration, and the identifications of the respective goods listed, as well. In citing In re i.am.symbolic llc, 866 USPQ2d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) and Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) the Board stated that in its analysis of the third factor, it must “assume that the identified goods move through all normal and usual channels of trade and methods of distribution for such goods and services.”

The Applicant argued that even though the marks were identical, the goods did not travel in the same trade channels and did not have the same consumer classes. It explained that its whiskey was not ordinary whiskey and the examining attorney “erred by dismissing the importance of the nature of the unique scotch [sic] whisky at issue, its typical consumer, channels of travel, marketing, and the restricted nature of the sale and the buying process.” It then introduced evidence of high-end whiskey, which sold for high prices ranging from $10,195 to $460,000 a bottle. Finally, the Applicant emphasized that its restricted identification set its whiskey apart from ordinary retail channels of trade for whiskey, and its exclusivity weighed heavily against finding confusion likely.

Considering the Applicant’s argument, the Board first found that none of the submitted evidence showed the same mark for both whiskey and wine, which meant there was no persuasive evidence to suggest that consumers would encounter the aforementioned goods under the same mark, from the same source. The Board cited Contrast In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018), which credited relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both.” Looking next at submitted evidence of online retail stores, which sold both whiskey and wine under various marks, the Board stated that it did not establish “relatedness or common trade channels for wine and whiskey ‘for private sale only by invitation.’” It found that given the exclusivity of the Applicant’s whiskey, it would not be found on a generally available internet-retail site. Turning to other third-party registrations pertaining to wine and whiskey, the Board found that some of the registrations “suggest[ed] that [wine and whiskey] are of a type which may emanate from a single source,” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998). However, it found the third-party registrations insufficient to establish relatedness of “wines” to the Applicant’s “aged luxury Scotch whisky for private sale only by invitation.” Ultimately, the Board found that the second and third DuPont factors weighed against a finding of likelihood of confusion.

Finally, the Board studied the fourth DuPont factor, which deals with the sophistication of the purchaser. Given the high-end nature of the Applicant’s listed goods, the Board found that the goods “would involve relatively careful purchasing conditions and more sophisticated purchasers.” See Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392, “Just from the record description of goods and services here one would expect that nearly all of opposer’s and applicant’s purchasers would be highly sophisticated.” Therefore, the Board found that the fourth factor weighed against a finding of likelihood of confusion.

In conclusion, the Board decided that the Applicant’s mark was not likely to cause confusion with the mark in the cited registration, and the satisfaction of the first DuPont factor was outweighed by the other relevant factors. So, the Board reversed the §2(d) refusal to register the mark KING’S RANSOM for “aged luxury Scotch whisky for private sale only by invitation.”

In a 2021 precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) refusal to register for the mark TRUST THE PROCESS for shoes and found it likely to cause confusion with the identical mark for shirts and sweatshirts.

The Board began its analysis of the marks starting with the first DuPont factor: the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018).

The Applicant, Joel Embiid, conceded that the marks were identical in appearance and sound but argued that confusion would be unlikely because his mark identifies him, and the Registrant’s, Marcus Lemonis, mark identifies him. He further reasoned that his mark would have a distinct connotation because he is a “famous NBA player, who’s known for his tagline ‘TRUST THE PROCESS’ and his nickname ‘THE PROCESS.’” Because of this, the Applicant argued that his mark would be synonymous with him and that his mark conveyed a commercial impression and connotation of “overcoming difficulties through perseverance and fortitude,” which was based on his own character. Finally, the Applicant argued that the marks were different since the Registrant’s goods (shirts and sweatshirts) were promotional items that supported the Registrant’s business advice and TV show, which had no connection to basketball or the Applicant. In citing In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) & In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984); and In re Sydel Lingerie Co., 197 USPQ 629 (TTAB 1977)) the Applicant stated the marks differ in meaning because they “create sufficiently different commercial impressions when applied to the respective parties’ goods or services such that there is no possibility for confusion despite overlaps in the marks.”

After reviewing the evidence submitted, the Board found that even if both parties were known in their different professions as TRUST THE PROCESS, the evidence was insufficient to show that consumers would associate the mark TRUST THE PROCESS solely with the Applicant or Registrant for their respective goods or that they would be able to differentiate the source of the goods sold under the two marks based on their respective owners. Further, the Board found that there was no reason to assume that the mark TRUST THE PROCESS would have one meaning in connection with the Applicant’s goods (shoes) and a different or secondary meaning in connection with the Registrant’s goods (shirts and sweatshirts) given their similar nature. In that fashion, the Board found the marks to be identical in appearance, sound, connotation and commercial impression, and stated, “The first DuPont factor weighs heavily in favor of a likelihood of confusion.” i.am.symbolic, 123 USPQ2d at 1748 (quoting In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

The Board then moved onto the second DuPont factor, which pertains to the similarity or dissimilarity of the goods and examined the relatedness of the goods at hand. “[B]ecause the marks are identical, the degree of similarity between the goods . . . required for confusion to be likely declines.” DeVivo v. Ortiz, 2020 USPQ2d 10153, at *11 (TTAB 2020). The Applicant first argued that the “goods are not even complementary or companion items that would be sold together.” Second, he argued that given both his fame and the Registrant’s fame, it would not be likely for consumers to purchase their respective goods without being aware of the source. “Therefore, consumers will be very familiar with the source of the goods prior to purchase, as they are buying the goods to show their support [of] Marcus Lemonis or Joel Embiid as the source of the respective goods, ensuring confusion will not result.”  The Board stated “we must presume that Applicant’s “shoes” and Registrant’s “shirts and sweat shirts” include “all goods of the type identified, without limitation as to their nature or price,” Sock It to Me, 2020 USPQ2d 10611, at *8. This presumption was made since neither the Applicant’s nor Registrant’s registration identified any limitations regarding the nature of the identified goods, their trade channels or consumer classes. The Board went on to say that if the parties had tailored their applications, it would have made a significant difference in the analysis. So, because of this, the Board found that “those ubiquitous, everyday products ‘are offered to all the normal potential consumers for those goods, which would include not only’ Applicant’s fans and fans of Registrant’s television show, ‘but all members of the general public.’” New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *16 (TTAB 2020). In conclusion, the Board stated, “The record as a whole is more than sufficient to convince us that ‘shoes,’ and ‘shirts and sweat shirts,’ are related, particularly given the reduced degree of similarity between the goods that is necessary for confusion to be likely arising from the fact that they are sold under identical marks,” and found that the second DuPont factor weighed in favor of finding confusion likely.

Finally, the Board turned its attention to the third DuPont factor, which looks at the channels of trade and classes of consumers. It found that given the nature of the goods, which were “marketed to the general population,” they were considered general consumer goods. Moreover, the record showed that both shoes and shirts were sold together on clothing websites and have been registered under a single mark by multiple apparel businesses. So, the Board found that both elements “plainly overlap[ped],” and found that the third DuPont factor supported a finding of likelihood of confusion.

In conclusion, the Board affirmed the §2(d) refusal to register based on the first three DuPont factors. It stated that based on the record as a whole, the Applicant’s mark TRUST THE PROCESS so resembled the Registrant’s mark TRUST THE PROCESS that when used in connection with their respective identified goods it would be likely for the marks to “cause confusion, to cause mistake or to deceive.”

When an Examining Attorney is examining a mark for registration, he must determine whether likelihood of confusion may exist between it, and an already-registered mark. Under §2(d), when analyzing marks for determining likelihood of confusion, that marks must be compared in their entireties as to appearance, sound, connotation and commercial impression. Further, during the analysis, the marks must be considered in their entirety and not examined piecemeal. “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir. 2015). However, if one feature of the mark is more prominent, it will be given greater significance for the purpose of finding likelihood of confusion between the marks at issue. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

Often, when a mark consists of both words and a design, more significance is given to the words because that is the aspect of the mark that purchasers are likely to remember, refer to or use when requesting goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Though the wording is commonly the dominant portion of a mark, there are certain instances where the design aspect of a mark is the more prominent portion, and it should be given greater significance. See Jack Wolfskin Ausrustung, 797 F.3d at 1372, 116 USPQ2d at 1135. This may be the case if the if the mark contains “unusual or uncommon design features,” or if the design element is the “most visually prominent” aspect. See In Re Primeway Intl. LLC, 87059786, 2019 WL 646088 (2019). In Primeway, the Trademark Trial and Appeal Board examined whether the Applicant’s mark, INCOGNITO, and Registrant’s STS “INCOGNITO” and design mark were confusingly similar. The Applicant’s mark was comprised of a wolf in sheep’s clothing with an arm extended out against the large letters “STS.” The word “incognito” appeared under the design in small letters, and so, the Board held that the most prominent feature of the mark was the design and the letters “STS,” not the shared term “incognito.” It then reversed the refusal to register under 2(d).

 In other words, the word portion of a mark is typically given greater significance because it is the portion that stands out for consumers, yet the design portion may be more dominant if it is the portion that is more likely to stand out to consumers.

In a 2021 non-precedential case, the Trademark Trial and Appeal Board reversed a §2(d) likelihood of confusion refusal of registration for the mark VALLKREE for “electric bicycles, electric go-karts, electric tricycles and various parts, ‘all of the foregoing not for use with motorcycles and their parts…’” It found that the applied-for mark was not likely to be confused with the registered mark VALKYRIE for “land motor vehicles, namely, motorcycles and structural parts therefor.”

Using the relevant DuPont factors, the Board began its analysis starting with the strength of the marks. “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). Beginning with the inherent strength of the registered mark VALKYRIE, which is defined as “any of the beautiful maidens attendant upon Odin who bring the souls of slain warriors chosen by Odin or Tyr to Valhalla and there wait upon them.”  The Board found the term, in relation to the cited goods, “at most evokes beauty, divinity or fortitude and thus mildly suggests a quality of the recited goods or the experience of riding them.” Therefore, in terms of inherent strength, it found VALKYRIE inherently distinctive in relation to the identified goods. Moreover, as the mark VALKYRIE is on the Principal Register, and did not require a claim of acquired distinctiveness under §2(f), the Board stated that it must presume that the mark was inherently distinctive, with no need to acquire a secondary meaning.

Turning to the first DuPont factor, the Board looked at the marks in their entirety in regard to their similarities and dissimilarities. “It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018).  Comparing the Applicant’s mark VALLKREE to the registered mark VALKYRIE, the Board first pointed out the obvious similarities: (1) Both marks have eight letters, (2) Six of the eight letters are the same and (3) the six identical letters are in the same sequence. So, the marks were found to be visually similar. In terms of the sound of the marks, the Board found that they sounded phonetically similar as the two letters in the marks that are not the same sound similar and are in similar spots. And, while the Board maintained that there is no correct pronunciation of trademarks, it held that “it stands to reason that the two marks will be verbalized in a very similar manner by consumers.” In addition, the Applicant indicated that the term VALLKREE had no meaning in a foreign language, nor was it recognized in the English language. So, the Board concluded that VALLKREE could likely be perceived by consumers as a clever or fanciful take on the known term VALKYRIE. Given these conditions, the first DuPont factor weighed in favor of finding a likelihood of confusion.

Finally, the Board examined the second DuPont factor, the similarity or dissimilarity of the goods, channels of trade and class of consumer. The Examining Attorney argued that the goods cited in the registrations for both VALLKREE and VALKYRIE were related, “because the same entities frequently provide both applicants’ and registrant’s goods and market the goods in the same channels of trade. As the evidence of record shows, it is common for entities to offer both applicant[’s] and registrant’s goods.” The Board found that the Examining Attorney submitted insufficient evidence to establish that the goods in the cited registration were related to the Applicant’s goods or that consumers were likely to believe the Applicant’s goods came from the same source as those in the cited registration. Thus, the second DuPont factor weighed in favor of finding confusion unlikely.

In conclusion, while the Board found that the marks VALKREE and VALKYRIE were highly similar in their appearance, sound and connotation, the Applicant’s goods were not related to those under the cited mark. So, the refusal to register the Applicant’s mark VALLKREE under §2(d) was reversed.

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) refusal of registration for the Applicant’s mark QUERCUS COFFEE (COFFEE disclaimed) for coffee and found it to be highly confusable with the already-registered mark QUERCUS for wine.

The Board began its analysis of the marks starting with the first DuPont factor, the similarity or dissimilarity of the marks in their entireties. Though the marks are to be considered as a whole, in this case, the term QUERCUS is the dominant portion of each mark, and in the Applicant’s mark, the term COFFEE is generic and was disclaimed. Since the term COFFEE was disclaimed, the Board found that it had little weight in its overall determination. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004). The Board then looked at the position of the term QUERCUS the mark and found it reinforced its dominance as it was the first element of the mark. Citing Presto Products, Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), the Board stated, “It is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” The Board glanced once again at the generic, disclaimed term COFFEE and found that it failed to distinguish the mark. “[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.” See In re Denisi, 225 USPQ 624, 624 (TTAB 1985).

Turning to the second portion of the first DuPont factor, the connotation and commercial impression of the mark, the Board started with the definition of the term QUERCUS. Quercus is defined as “a genus of hardwood often evergreen trees or shrubs (family Fagaceae) that comprise the typical oaks and include sources of nutgall.” The Applicant’s website claims that the coffee is called QUERCUS after the Andean Oak it used to create the rum barrels, in which the Applicant’s coffee is “barrel-aged.” Turning to the already-registered mark, QUERCUS, the Board quickly surmised that wine is occasionally aged in barrels as well. Therefore, consumers of goods under both marks would most likely assume that the term QUERCUS would have the same meaning in referencing the barrels used to age both coffee and wine. “We find that in their entireties, the marks are not only highly similar in appearance and sound due to common term QUERCUS but that they are also highly similar in connotation and convey a substantially similar commercial impression.”  The Board concluded that the first Dupont factor, in both parts, weighed in favor of finding confusion likely.

The Board then looked at additional DuPont factors, the similarity of the goods, channels of trade and classes of consumers. Before beginning its analysis, the Board reiterated that it is not necessary for the goods to be identical or competitive or be sold in the same trade channels to support a finding of likelihood of confusion. What does matter is they are related in some manner or the conditions/activities surrounding the marketing of the goods are similar enough that they may be encountered by similar consumers who would be led to believe that the goods originate from the same source. See Coach Servs. v. Triumph Learning 101 USPQ2d 1713 at 1723. In sum, the issue at hand is not whether the consumers would confuse the coffee with the wine, but whether or not there would be a likelihood of confusion that the coffee and wine came from the same source. The Examining Attorney submitted 20 use-based, third-party registrations showing registration of a mark by a single entity for both wine and coffee. The Board found that the third-party registrations were relevant evidence as they serve as proof that the goods are such that they may originate from one source under one mark. See, e.g., In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001). So, as it was evident that both coffee and wine may be offered under one mark, and potentially found in similar trade channels, the Board found that the Applicant’s coffee and the Registrant’s wine were commercially related for the purpose of finding a likelihood of confusion holding. Therefore, the second DuPont factor favors a finding of likelihood of confusion.

After finding the other relevant DuPont factors neutral, the Board concluded that confusion was likely between the Applicant’s mark QUERCUS COFFEE and the Registrant’s mark QUERCUS. It found that confusion was likely given that the term QUERCUS was the dominant portion of each mark, the connotation and commercial impression of the term QUERCUS was similar enough to confuse consumers, the relatedness of the goods – as to the fact that they may be sold under one mark and can both be aged in barrels and the overlapping trade channels and classes of consumers. Therefore, the Board affirmed the §2(d) refusal for registration of the mark QUERCUS COFFEE.

In a 2020 non-precedential case, the Trademark Trial and Appeal Board dismissed a §2(d) claim of likelihood of confusion for the Applicants’, Grant Toland, Alexander Prenta and Russ Bennett,  mark EIDOLON for “spirits, excluding distilled blue agave liquor and mezcal; wine,” in International Class 33 and “beer” in International Class 32 and found it not likely to be confused with the Opposer’s, Campari Mexico, S.A. de C.V., mark ESPOLON for “alcoholic beverages except beer,” in International Class 33.

The Board began its likelihood of confusion analysis of the marks in regard to the goods in both Int. Class 33 and Int. Class 32 by stating that two key factors of any §2(d) case are the similarities between the marks and the similarities between the goods or services offered under the marks. “The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

Starting with the first du Pont factor, the similarity or dissimilarity  of the marks in their entireties in terms of appearance, sound, connotation, and commercial impression, the Board looked at the Opposer’s mark ESPOLON and the Applicants’ mark EIDOLON in standard characters and found the following: (1) both marks consist of seven letters, (2) both marks begin with the letter “E” and (3) both marks end with the letters “OLON.” Aside from the first three letters, “ESP” and “EID,” of each mark, it decided that the marks were similar in structure, as both were three syllables, started with the same letter and the last four letters were identical. As to sound, the Board found that while the final syllable was almost identical in sound when spoken, the first two were somewhat different. However, in citing In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984), the Board stated that there was no “correct” pronunciation for a trademark, and that “consumers may not pronounce either mark as intended, even if they recognize it as a known word.” Moving its attention to the meaning of the marks, the Opposer’s mark ESPOLON is a Spanish word that is not available in English-language dictionaries and translates to “spur,” which is defined as a “pointed, rigid growth on the inner leg of a rooster.” The Applicants’ mark EIDOLON is a word of Greek origin that does appear in English-language dictionaries and means, “an image or representation of an idea; an idealized person or thing; a specter, phantom, ghost, or elusive entity.” The Applicants and the Opposer were in agreeance that the “marks are not English word[s] and are therefore not immediately likely to be translated in the minds of English speakers.” The Board was also in agreement and found that there was no certainty as to whether relevant consumers would recognize the terms comprising the marks as words or coined terms. Ultimately, the Board concluded that the marks were “more similar than dissimilar in appearance and sound, somewhat different in connotation and, overall, convey commercial impressions that are more similar than dissimilar.” Therefore, the first du Pont factor favored a finding of likelihood of confusion.

The Board then looked at the second and third du Pont factors, the nature and similarity or dissimilarity of the goods, the likely-to-continue trade channels and the class of purchasers. Turning first to the second du Pont factor, it looked at the Applicants’ applied for goods in Int. Class 33, which were “spirits, excluding distilled blue agave liquor and mezcal; wine,” and found the goods to be legally identical to the Opposer’s listed goods which were “alcoholic beverages except beer,” in the same Class. With regard to the Applicant’s goods listed under Int. Class 32, specifically “beer,” the Board was not concerned that Opposer’s goods explicitly excluded beer. It stated that in order to support a finding of likelihood of confusion, it was not necessary that the goods were identical or even competitive. Further, it said, “the goods need only be ‘related in some manner or … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Citing Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); See Anheuser-Busch, LLC, 115 USPQ2d at 1827. In its argument, the Opposer submitted evidence showing multiple retailers that offered the distribution and delivery of both beer and liquor, moreover, posts on the Applicants’ discussed the creation of various alcoholic beverages and explained that the same ingredients could be used to make wine, spirits and beer. Further evidence was submitted showing several beverages which included both spirits and beer. However, the Board was not convinced of relatedness of the goods and concluded: “The evidentiary showing in this case falls somewhat short of establishing that consumers are likely to believe that beer and other alcoholic beverages emanate from a common source.” In a similar manner, the Board found the Opposer failed to establish that the Applicants’ Class 32 goods were similar to its applied-for goods, given that both parties’ Class 33 goods were legally identical. Briefly looking at the third du Pont factor, the Board concluded that since the parties Class 33 goods were legally identical, it was fair to presume that the channels of trade would be the same as well. “Where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same.” See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968).  Therefore, in terms of the Int. Class 33 goods, the above du Pont factors supported a finding of likelihood of confusion yet did not support a finding of likelihood of confusion for the Int. Class 32 goods.

Finally, the Board look at the strength of the Opposer’s mark and found it to be arbitrary and inherently distinctive. Looking at the fifth du Pont factor, the commercial strength of the mark, the Board found that the Opposer had found, “some commercial success and media recognition for its goods under the ESPOLON mark.” It concluded that ESPOLON was a strong mark for alcoholic beverages and therefore was entitled to a broad scope of protection on the spectrum of “very strong to very weak.” In citing Joseph Phelps, 122 USPQ2d at 1734. So, the fifth du Pont factor favored a finding of likelihood of confusion.

The Board then came to its decision in regard to the likelihood of confusion of the Opposer’s mark ESPOLON and the Applicants’ mark EIDOLON for the goods in both Int. Class 33 and Int. Class 32. Starting with Class 33, it concluded that given the similarity of the two marks, and the goods’ presumed identical trade channels and relevant purchasers, the Applicants’ applied-for mark, in connection with the Applicants’ recited Class 33 goods, was likely to cause confusion with the Opposer’s previously used and registered mark ESPOLON, which was entitled to a broad scope of protection, given its inherent and commercial strength. So, the Board sustained the §2(d) opposition against the Applicants’ registration in regard to its’ goods in Int. Class 33. Quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992) the Board said, “[w]hen marks would appear on virtually identical … [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.”

However, since the Board had previously stated that the evidence fell short in showing a relation between the Opposer’s goods and the Applicants’ goods under Int. Class 32, it concluded that “consumers are not likely to experience confusion as to the source of those goods, notwithstanding the similarities between the marks.” See, e.g., Kellog Co. v. Pack’ em Enters., Inc., 14 USPQ2d 1545 (TTAB 1990). Therefore, the Board dismissed the opposition of likelihood of confusion under §2(d) for the Applicants’ goods in Int. Class 32.

In a 2020 non-precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) likelihood of confusion refusal of registration for the mark CITRUS CLUB (CLUB disclaimed). The Board found that Applicant’s mark, CITRUS CLUB, for “cocktail lounge services” would be confusable with the registered mark, CITRUS KITCHEN (KITCHEN disclaimed), for “restaurant services.”

The Applicant argued that its mark CITRUS CLUB was used for a “reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina,” and it “operates exclusively in the evenings, employs a dress code and prohibits children under the age of 21 from entering.” Whereas the registered mark, CITRUS KITCHEN, was used for a “sole store-front physical location in Rancho Cucamonga, California…” and it was focused on “hand-crafted, healthy meal options.” Moreover, it is “open during the day, closes at 8 p.m. on Monday through Saturday, does not feature a dress code and allows children.” The Board used the relevant DuPont factors to determine whether or not the two marks were confusable. “[L]ikelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”’ See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

Starting with the second DuPont Factor, the Board analyzed the services cited in both the registrations and applications of the marks. The Applicant argued that its mark CITRUS CLUB was different than the registered mark CITRUS KITCHEN because it was a cocktail lounge and not a restaurant, however, the Examining Attorney submitted evidence which defined “cocktail lounge” as a bar, and as “a public room (as in a hotel, club or restaurant) where cocktails and other drinks are served.” This shows that the two services are closely related and that a cocktail lounge may even be within a restaurant. The Examining Attorney further submitted evidence which cited six separate entities that advertised as both a restaurant and cocktail lounge, furthering the argument that the two services are fairly intertwined. Aside from the evidence showing that cocktail lounges may be found in restaurants, the Examining Attorney also cited third-party registrations which showed restaurants that offered high-end cocktails much like a cocktail lounge would. In sum, not only can restaurants and cocktail lounges coexist in one place, but they can offer similar services as well. Therefore, the Board determined that the second DuPont factor weighed in favor of finding confusion likely.

Turning briefly to the third DuPont factor, the similarity of the trade channels and classes of consumers, the Board dismissed the Applicant’s argument that the two marks were used in separate states. As it previously found, cocktail lounges and restaurants can exist in the same place, therefore, that is already one similar trade channel. Further, it deemed that the services cited for the two marks could be offered to the same class of consumers, same type of patron and similar times of the evening. The Applicant further argued that the consumer classes were not the same since there were restrictions in place to enter its establishment, such as a dress code and prohibition of children under 21. However, the Board nullified the argument by stating that those specific restrictions were not reflected in the identification of the services in the registration or application. A likelihood of confusion analysis is based solely on the goods and services listed in the registration and application, not upon restrictions later set forth. “[We] “have no authority to read any restrictions or limitation into the registrant’s description.” Further, an applicant cannot “restrict [their] scope . . . by argument or extrinsic evidence.” See In re I-Coat Co., 126 USPQ2d 1730, 1739 (TTAB 2018) (quoting In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)) Again, the Board found that the third DuPont factor weighed in favor of finding confusion likely.

The Board then focused its attention on the first DuPont factor, the similarity of the marks. Looking at the two marks side by side, the Board deemed the Applicant’s mark CITRUS CLUB similar to the registered mark CITRUS KITCHEN since CITRUS is the first term in each and is followed by a highly descriptive or generic term in each (both CLUB and KITCHEN were previously disclaimed). Further, the marks were visually and aurally similar, and the Board decided that as the initial element, the term CITRUS would be more likely to be noticed or remembered by consumers. See Palm Bay, 73 USPQ2d at 1692 “Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label.  Further, see Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) in stating, “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Looking then at the connotation of the two marks, the Board found that the term CITRUS, to the extent it suggested the use of citrus being used in food or drinks, would convey the same meaning to consumers in both marks. Ultimately, given the similarity of the marks’ sound, appearance and similar connotation and commercial impression of the shared term “citrus,” the Board found that the first DuPont factor weighed heavily in finding confusion likely.

In a final argument, the Applicant attempted to argue that CITRUS and KITCHEN are both common and frequently used terms, and therefore, the registered mark should be afforded only a limited scope of protection. The Applicant submitted third-party evidence that demonstrated the term CITRUS in connection with food, however, the Board found the evidence to be wholly inadequate due to the fact that while the submissions linked the term CITRUS to food, none of them linked the term to restaurant services. The Board ended the argument by saying that it did not find the mark CITRUS KITCHEN inherently weak or commercially weak to a point that it would allow registration of the Applicant’s mark CITRUS CLUB.

In conclusion, the Board found the marks to be similar in trade channels, consumer classes, sound, appearance and commercial impression. The relevant DuPont factors, in this case, the first, second and third, all weighed in favor of finding confusion likely, therefore, the Board affirmed the refusal to register the mark CITRUS CLUB under §2(d) likelihood of confusion.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board dismissed the §2(d) opposition against Lawson’s Finest Liquids, LLC’s (applicant), mark CHINOOKER’D IPA (IPA disclaimed) for beer, and found it unlikely to be confused with W. Clay Mackey’s (opposer), CHINOOK for “table wine and sparkling wine,” and his presumed common law rights in the same mark for beer.

Turning first to the opposer’s alleged common law rights to the mark CHINOOK for beer, the Board deemed the term generic, and therefore not protected by common law rights. At the core of any genericness case, is the issue of whether relevant members of the public use or understand the term in question in connection with the genus of the good being used under the mark. See Royal Crown, 127 USPQ2d at 1046. In this specific case, of CHINOOK for beer, the U.S. Department of Agriculture identified Chinook as a variety of hops, which is used in brewing beer. Moreover, the applicant’s expert witness testified a similar statement, and a slew of articles, unrelated to the opposer’s product,  supported the testimony. The Board found that the evidence clearly showed that “the relevant purchaser perceives Chinook as indicating a type of beer by referring to a key aspect of that product.” Ultimately, the Board concluded the opposer had no proprietary rights in the term, as it is generic when used in connection with beer, since the relevant public already perceived that the beer was brewed with Chinook hops.

The Board then turned its attention to the main issue: Whether or not the applicant’s mark CHINOOKER’D IPA, for beer, was likely to cause confusion with the opposer’s registered mark CHINOOK for “table wine and sparkling wine,” under §2(d) likelihood of confusion. It used the relevant Dupont Factors to come to its ultimate finding. Starting with the second Factor, the similarity or dissimilarity and nature of the goods in connection with the mark, the Board found the mark to be arbitrary for wine, as the opposer testified that the mark was meant to reference positive attributes of the Pacific Northwest. Therefore, the mark was considered inherently strong. Moving to the seventh Factor, the nature and extent of any actual confusion between the marks, the Board deemed this factor neutral as there was no reasonable opportunity for confusion to occur, which is what gives this factor any probative value. See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). In examining the third and fourth Factors, similarity of trade channels and impulsive vs. careful buyers, the Board found that beer and wine are most often offered in the same trade channels to some of the same types of consumers. Since the two marks are for goods offered in the same trade channels, and neither appeal to any specific type of consumer, it was to be presumed that the purchasers of either sides’ goods would include both impulsive and careful consumers. Finally, the Board looked at the first Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. It found that since the applicant’s mark encompasses a portion of the opposer’s mark, the two are similar in sound and appearance. However, the connotations of the marks are very dissimilar. The opposer’s mark was meant to suggest the Pacific Northwest, while the applicant’s mark “engenders the commercial impression of getting snockered (i.e., drunk) on beer made from Chinook hops.” In this fashion, the two marks do not have the same connotation or give off the same commercial impression.

In conclusion, the Board found confusion unlikely under §2(d) for CHINOOKER’D IPA for beer and CHINOOK for table and sparkling wines. Its ultimate decision was that the dissimilarity in the marks’ connotation and commercial impression heavily outweighed the similarity in sound and appearance. “Each of the evidentiary factors set out in DuPont, may, from case to case, play a dominant role.” As stated in Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). The commercial impression, in this case, was particularly important as Chinook is generic for beer, and that ultimately made the applicant’s mark arbitrary, and inherently strong, as used in connection with the applicant’s goods.

Under §2(d) of the Lanham Act, marks that are confusingly similar may not be registered with the USPTO.  When it comes to determining likelihood of confusion, the examining attorney considers the Dupont Factors. Often, the first two: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s), hold the most weight. However, there is no precedent that states that the first two are the most important. All of the factors must be considered equally in light of the evidence provided in each case. In the case below, a decision made by the Trademark Trial and Appeal Board was vacated and remanded by the U.S. Court of Appeals for the Federal Circuit, because the Board failed to consider all of the factors for which there was evidence.

In 2017, the Trademark Trial and Appeal Board affirmed the §2(d) refusal of the mark GUILD MORTAGE COMPANY for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” (MORTGAGE COMPANY was disclaimed) Finding it confusingly similar with the registered mark GUILD INVESTMENT MANAGEMENT for “investment advisory services.” (INVESTMENT MANAGEMENT was disclaimed) In light of this, the Applicant appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC).  In 2019, The CAFC issued a decision that vacated and remanded the TTAB’s decision “for further proceedings consistent the [its] opinion.” The CAFC stated that the Board failed to address the applicant’s arguments and evidence related to the eighth Dupont Factor, which examines the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

In a 2020 precedential opinion, on remand from the CAFC, the Board issued a final decision in regard to the mark GUILD MORTGAGE COMPANY.  As instructed, the Board reexamined the case giving more consideration to the eighth Dupont Factor. Starting with the first factor, the Board found that the dominant term in both marks was “guild.” Therefore, it ultimately found that the similarities between the marks, in accordance with “guild(‘s)” dictionary definition and overall commercial impression, outweighed the differences in sight and sound. The Board found that the first Dupont Factor weighed in favor of a finding of likelihood of confusion. As to the second factor, which examines the parties’ involved services, submissions of third-party registrations covering both mortgage banking and investment advisory services were enough to convince the Board that the services are related. Moreover, in accordance with the third factor, the Board found that the same consumers who seek mortgage banking services may also seek investment advisory services. Therefore, the channels of trade and classes of consumers are likely to overlap. Moving to the fourth factor, which examines the degree of purchaser care, the Board made its determination in light of Stone Lion Capital, 110 USPQ2d at 1163, which states that the decision must be based on the least sophisticated consumer. Regardless, the Board found that “consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded.” In sum, the fourth factor weighed mildly against finding a likely confusion.

Finally, the Board turned to examine the factor for which the case was remanded, the eighth factor. This factor looks at the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The eighth Dupont Factor requires consideration of the actual market condition, as opposed to the other factors in this case that require analysis based on the application and cited registration and do not consider evidence of how the Applicant and Registrant actually rendered their services in the marketplace. Considering the actual market condition, both services were based in Southern California and operated there for approximately 40 years with no evidence of actual confusion. Not only did both parties conduct businesses in the same state, they ultimately expanded into other states as well. However, there was no evidence to indicate any specific geographical areas of overlap between the consumer markets for the different services. Ultimately, though the parties both conducted business in California, and potentially in some of the same states nationwide, there was not enough evidence to show that “in the actual marketplace, the same consumers have been exposed to both marks for the respective services…” In conclusion, the Board deemed the eighth Dupont Factor neutral and after balancing the other relevant factors, found confusion likely and affirmed the refusal to register under §2(d) of the Lanham Act.

Though the Board ultimately ended up at the same conclusion as it did in 2017, it may have turned out differently if both parties had been heard from. In an ex parte context, there was not an opportunity for the Board to hear from the Registrant in regard to whether or not it was aware of any reported instances of confusion. Since the Board was only able to get “half of the story,” it gave limited probative value to the evidence provided for the eighth factor. This case demonstrates that the weight of each factor varies on a case-by-case basis.